18 thoughts on “Legal Ethics Survey

  1. Fascinating story over at Patent Appeal Tracker regarding a young attorney who followed the money, and his client’s orders.

    Skip down to the part titled “Witness Tampering…”

    link to patracer.com

    The disregard for conflicts of interest is astonishing. Perhaps they figured that no one ever gets punished?

  2. Really, the more common situation is that in-house counsel finds out about art from the inventor at the last minute (ie, after the notice of allowance) and/or an outhouse counsel finds out about it from the in-house counsel because of last-minute information from the inventor.

    In my experiences in-house, the choice was always to submit an IDS, and/or to withdraw the case from issuance, though there was often agonizing about whether the ref was really material or not.

    Even if there was a sincere belief that the ref most likely fell on the side of immaterial, a continuation might be filed with the new ref supplied and the scope of the claims altered enough to avoid a statutory double patenting rejection, to be on the safe side. Again, it wasn’t really an issue of scamming the system–just that reasonable minds can differ on the issue of materiality.

    Most of the attorneys I know actually do have integrity.

  3. Would love to see the survey results as I think they’ll be just as thought provoking as some of the questions as well as quite educational. When and were will they available? Anyone know?

  4. “LaBounty argues, nevertheless, that the ALJ’s finding should be set aside because the issues respecting experimental use of the Adamo/Dodge and Ace shears were “close” and, therefore, Roy LaBounty and his attorney could reasonably have decided these devices did not have to be disclosed. On the contrary, that makes it all the more necessary that the devices should have been disclosed to the examiner. Close cases should be resolved by disclosure, not unilaterally by the applicant.” LaBounty Mfg., Inc. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1076, 22 USPQ2d 1025, 1033 (Fed. Cir. 1992).

    I think *deliberately* holding the art until the applicant receives the NOA is done to harass and/or burden said applicant. But it’s a matter of parsing, I suppose — is the “means” employed by the attorney (a) the submission of art to the applicant or (b) the *timing* of the submission of art to the applicant?

  5. “…Under 37 CFR 56(2) (i) and (ii), art is material and should be submitted if it is inconsistent with arguments for patentability or against unpatentability.”

    should be “…Under 37 CFR 56(b)(2)…”

  6. Aside from what action an individual prosecutor might decide to take in a particular instance, one problem with the survey and some of the survey hypotheticals is that the survey talks about the citation of the art in terms of ethical duty, when, in reality, any requirement to submit the art would be under the Duty to Disclose under 37 C.F.R 1.56. The additional twist in all of these “Poor Man’s Opposition” scenarios that has not been raised comes in under the definition of materiality under 37 CFR 1.56(b), which states in part:

    “…information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and

    (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or

    (2) It refutes, or is inconsistent with, a position the applicant takes in:

    (i) Opposing an argument of unpatentability relied on by the Office, or

    (ii) Asserting an argument of patentability.

    A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.”

    I can see some individuals saying that it is easy to argue that even close art would not be material in the sense that it would not establish a prima facie case of unpatentability – and therefore need not be submitted. However, ordinarily the burden of establishing the prima facie case falls on the Examiner. The applicant and related parties are not in the best position to judge prima facie cases.

    Under 37 CFR 56(2) (i) and (ii), art is material and should be submitted if it is inconsistent with arguments for patentability or against unpatentability.

    Therefore, based on the possibility of inconsistency with arguments of record, the citation of anything remotely relevant out of an abundance of caution is more compelling IMHO than refraining from submission based on a from-the-hip determination that the art would not establish a prima facie case of unpatentability. I would feel much better having the Examiner make a determination of non-materiality after of-record consideration of the art.

    A patent that issues on such an approach to art citation, including withdrawal from issue when called for, would have a much better chance of surviving litigation as well.

  7. “easily rebutted by pointing out that the purpose of such a tactic is to uphold the integrity of the PTO rules”

    With respect, Jeff, that rebuttal is a bit thin. We’re talking about the situation where the attorney intentionally sits on the reference until the last minute. Presumably the applicant has no knowledge of the reference, so there’s no issue of fraud on the PTO. I don’t see how waiting, and setting a trap for the applicant, upholds the integrity of anything. If the PTO rules were really desired to solicit 3rd parties’ active participation, they would be written to encourage third party submissions, rather than strictly limiting them to 2 months after publication.

    Although it’s extremely unlikely that someone would ever get called on it, I think it’s a nasty trick precisely because it has no purpose other than to harass/delay, and is therefore in violation of the rules.

  8. The suggestion that disciplinary rules prohibit a last-minute “poor man’s opposition” is easily rebutted by pointing out that the purpose of such a tactic is to uphold the integrity of the PTO rules, which is a “substantial purpose other than to embarrass, delay, or burden a third person”. An applicant has no present or prospective right to obtain a patent by fraud on the PTO.

  9. In lawyer speak, anyone could argue, with or without a straight face, that any given piece of prior art is cumulative. And in litigation, also in lawyer speak with or without a straight face, anyone could argue you are wrong to the extent of “inequitable conduct.”

    Now, any given judge judging that litigation, in judge speak, can tank either litigant on that issue, OR ANY OTHER ISSUE S/HE CAN CONJURE UP NIFONG-STYLE, depending on who he wants to prevail.

    For example, if the litigation is between “little mom and pop inventor biz” v “big business entity,” if the judge wants to be politically correct, he will tank the little guy’s patent and let the patent pirate infringer off scot-free.

    Believe it or not, this life-changing tragedy happens more frequently lately, especially since the Supreme Court weighted-in Constitutionally-unlawfully in eBay.

    Here’s the advice from this sad ordinary inventor without a Ph.D., law degree or even an A.A:

    Always, always file an IDS if there is any remotely plausible reason at all, even if it is cumulative prior art and even if it may delay the patent’s issue.

    Its that time again in Bermuda…

  10. In my humble opinion, I think that there is something shady about an attorney that: (a) knows of non-cumulative prior art; (b) plans to send the art to the inventor; but (c) waits until the notice of allowance to do so.

    I do not think that there is anything wrong with promptly providing those references or non-cumulative prior art to the inventor (or inventor’s counsel). But, if that information is known for months and the attorney chooses to employ a delay tactic just to inconvenience the inventor, then I think that there is an ethical violation from the submitting attorney also.

    I am not sure about other states, but, in Georgia, employing such tactics comes really close to violating (if not actually violating) the code of professional conduct.

    Specifically:
    If the attorney contacts the inventor directly (and not the inventor’s counsel), then it is a violation of RULE 4.2 COMMUNICATION WITH PERSON REPRESENTED BY COUNSEL (Subsection (a) recites: “A lawyer who is representing a client in a matter shall not communicate about the subject of the representation with a person the lawyer knows to be represented by another lawyer in the matter, unless the lawyer has the consent of the other lawyer or is authorized to do so by constitutional law or statute”).

    If the attorney has the information but waits until the very last minute to provide that information to the inventor or inventor’s counsel, then it may be a violation of RULE 4.4 RESPECT FOR RIGHTS OF THIRD PERSONS (“In representing a client, a lawyer shall not use means that have no substantial purpose other than to embarrass, DELAY, or burden a third person . . . .” (emphasis mine)).

    My guess is that other states have similar provisions in their respective codes of ethics.

    Again, only my two cents.

  11. Patent practitioners are required to comply with the “rat fink rule” in 37 CFR §10.24 by reporting known violations of the Disciplinary Rules to OED, including their own. I suspect this is seldom done, as it is not conducive to winning friends, influencing people or professional advancement. It remains the right thing to do, however.

  12. That was fun, but it took way more than four minutes because I wrote an essay.

    I answered quite honestly, but some of my answers were “I don’t know.”

  13. Ditto, bhr.

    What’s missing is a question along the lines of the following: “Have you ever known or been aware of an individual in your office who did not disclose to the USPTO information likely material to the patentability of a pending claim?”

    Not that I would expect THAT question to be answered honestly by everyone, either, but I doubt the results would be congruent with the results of the self evaluation survey.

  14. I predict that the overwhelming majority of those who choose to answer the survey will claim to travel the moral high road.

  15. Thanks for remembering to include “inventors” in this survey, without whom youse Examiners & Patent Attorneys would be doing something else.

    It is rapidly approaching Happy Hour in Bermuda.

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